Lismont v. Alexander Binzel Corp.
Addressing laches issues in the context of a multi-jurisdictional dispute, the US Court of Appeals for the Federal Circuit affirmed a summary judgment ruling that the plaintiff’s correction of inventorship lawsuit was barred by the doctrine of laches. Lismont v. Alexander Binzel Corp., Case No. 14-1846 (Fed. Cir., Feb. 16, 2016) (Chen, J).
Mr. Hedwig Lismont resides in Belgium. He asserts that in 1995 he began developing a manufacturing process at the request of welding equipment manufacturer Binzel-Germany. According to Mr. Lismont, after he disclosed the details of his manufacturing process to Binzel, the company began filing patent applications naming a Binzel employee, and not Mr. Lismont, as the inventor. Three filings are of relevance:
- A German patent
- A Patent Cooperation Treaty (PCT) application claiming priority from the German patent
- A US patent claiming priority from the PCT application
The US patent is directed to a cost-effective method of manufacturing a contact tip for use in metal inert gas welding.
Mr. Lismont first filed a lawsuit in Germany in 2000 alleging that he was the true inventor of the German patent. He filed a second suit with similar allegations in 2002. The German lawsuits were eventually decided against Mr. Lismont, with the courts concluding that he failed to prove his inventorship interest.
In 2012, Mr. Lismont sought correction of inventorship with respect to the US patent by bringing a lawsuit in the United States under 35 USC § 256. After limited discovery, Binzel moved for summary judgment that the claim was barred by laches since Mr. Lismont knew of the PCT application that precipitated the issuance of the US patent in 2002, yet waited 10 years before initiating a lawsuit in the United States.
The district court granted the motion, finding Mr. Lismont’s inventorship claim barred by laches. The district court concluded that the rebuttable presumption of laches would attach since more than six years had passed between the filing of the lawsuit and the time Mr. Lismont knew or should have known of the US patent’s issuance. The district court further concluded that Mr. Lismont failed to rebut the presumption of laches with evidence that the delay should be excused or was otherwise reasonable. Mr. Lismont appealed.
Summary judgment orders are typically reviewed de novo, but because laches is an equitable doctrine that turns on questions of fact, the Federal Circuit reviewed the district court’s conclusions for abuse of discretion. With respect to the laches, the Federal Circuit agreed that the presumption of laches applies and that the district court “properly determined that Mr. Lismont had not presented any genuine issues sufficient to rebut the presumption.” In reaching this conclusion, the Federal Circuit rejected two of the appellant’s positions. First, Mr. Lismont had argued that the presumption of laches was inappropriate because he had been diligently seeking to vindicate his inventorship rights in European courts and therefore did not delay the US litigation. The Federal Circuit disagreed, explaining that in order to avoid the imposition of laches, Mr. Lismont should have initiated his correction of inventorship suit within six years of the US patent issuance.
Second, Mr. Lismont contended that the European litigation efforts should rebut the presumption of laches. The Federal Circuit rejected this argument as well, finding that a foreign litigation could only excuse a plaintiff’s delay where the defendant had adequate notice of the foreign litigation as well as plaintiff’s intention to pursue his or her rights in the United States upon completion of the foreign litigation. Here, there had been no adequate notice or threat of litigation in the United States. The mere initiation of patent litigation in a foreign jurisdiction and the existence of a US patent are insufficient to rebut the presumption of laches.